SUBSTANCE FOR SUCCESS not registrable for chemicals

In BYK-Chemie GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-58/07, July 9 2008), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had held that the mark SUBSTANCE FOR SUCCESS was devoid of distinctive character.

On February 11 2004 BYK-Chemie GmbH applied to register the mark SUBSTANCE FOR SUCCESS as a Community trademark for the following goods and services in Classes 1, 40, 41 and 42 of the Nice Classification:

Class 1 - “chemicals used in industry, particularly additives for lacquers and plastics”;
Class 40 - “services of a chemistry enterprise, namely customized production of chemicals”;
Class 41 - “arranging and conducting of seminars”; and
Class 42 - “technical consultancy in the field of chemical additives”.

The examiner refused the application in respect of all goods and services on the grounds that the mark was devoid of any distinctive character.

The Fourth Board of Appeal of OHIM dismissed BYK’s appeal and confirmed the examiner’s decision, holding that the mark applied for could easily be perceived by the relevant public (which consisted of experts in the field of chemistry) as referring to substances that would bring success to consumers, either in the sense of the successful application of a certain product for a certain purpose or in the sense of financial success. Therefore, the mark functioned first and foremost as a slogan aiming to promote the goods and services in question.

BYK appealed to the CFI. According to BYK, the trademark applied for conveyed only a vague message and had different meanings since the word ‘substance’ might be understood either as a “chemical substance”, or as the “essence” or “heart” of something. In the latter case, how the substance might bring success remained vague. Further, the slogan’s symmetry and the use of alliteration enabled consumers to recognize and memorize the mark as an indication of origin.

The CFI upheld the decision of the board of appeal, stating that a sign which fulfils functions other than that of a trademark (eg, an advertising slogan) is distinctive only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods and services of the owner of the mark from those of a different commercial origin.

The CFI pointed out that the mark applied for consisted merely of the juxtaposition of two expressions referring to the properties of the goods and services in question. Therefore, the mark clearly indicated a positive relationship between the use of the goods and services at issue and the required result.

Any other meaning of the word ‘substance’ would require a detailed analysis and would not usually be used by the relevant public, even if the latter consisted of experts.

Consequently, the CFI dismissed the appeal.

Anna-Sophie Steinmeister, Bardehle Pagenberg Dost Altenburg Geissler, Munich

SUBSTANCE FOR SUCCESS not registrable for chemicals

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